Federal Circuit Outlines Four Options For Overcoming Obviousness Rejections Based On Routine Optimization

In E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit reversed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that had upheld Synvina’s chemical process patent against an obviousness challenge brought in an Inter Partes Review (IPR) proceeding. In so doing, the court outlined four ways to prevail against an obviousness rejection based on routine optimization.

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USPTO Offers Refund of Certain Non-Electronic Filing Fees Incurred During DSUEBSO

One of the many concerns raised by the recent outage of the USPTO’s electronic filing system was the requirement to pay the surcharge due when a new U.S. application is not filed electronically. The surcharge is statutory (enacted as part of the AIA), so the USPTO could not waive the fee. However, it has prescribed a process for applicants to obtain a refund that involves re-filing the application electronically in the record for the originally filed application.

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Sales Catalog From Dealer Trade Show Qualifies As Printed Publication

Petitioners in Inter Partes Review proceedings have looked beyond typical patent and scientific literature to find a “printed publication” that might invalidate a patent. This has given the USPTO Patent Trial and Appeal Board (PTAB) and Federal Circuit an opportunity to explain and further define that category of prior art. GoPro, Inc. v. Contour IP Holding LLC is the latest Federal Circuit decision in this category. There, the court reversed the PTAB and found that a sports video camera sales catalog distributed at an action sports vehicle dealer trade show qualified as a “printed publication” under 35 USC § 102.  Continue reading this entry

FDA Xyrem Meeting Materials Qualify As Printed Publication

In Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, the Federal Circuit affirmed decisions of the Patent Trial and Appeal Board (PTAB) that invalidated seven Orange Book-listed patents for Xyrem®. The main issue on appeal was whether FDA meeting materials available on a web page published in a Federal Register Notice qualified as a “printed publication” under 35 USC § 102. The Federal Circuit agreed with the PTAB that they did.

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